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December 20, 2007

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In a decision this week, the Eleventh Circuit affirmed a grant of summary judgment of no service mark infringement. The court held that there were no triable issues of fact as to whether the companies' service marks were confusingly similar, the existence of actual confusion, and the defendant's intent.More details of Welding Servs., Inc. v. Foreman after the jump.Welding Services and Welding Technologies are rival companies providing services for maintaining equipment used in heavy industry. Since 1990, Welding Services has been using the abbreviation "WSI," and since February 1994 has been using a stylized logo consisting of the same initials "WSI" surrounded by a circle, as depicted below:Welding Technologies was founded in 2003. In May 2005, a group of former Welding Services employees, named individually in the lawsuit, bought Welding Technologies from the original owners. The Welding Technologies "WTI" logo at dispute in the lawsuit was created in 2003, and is shown below:

Welding Services brought suit against Welding Technologies alleging federal trademark infringement of its abbreviation and stylized logo under section 44 of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) , as well as various state law claims, including unfair competition and deceptive trade practices. Welding Services and Welding Technologies made cross-motions for summary judgment on the Lanham Act claim, and Welding Technologies also moved for summary judgment on the state deceptive trade practices and unfair competition claims. The district court granted summary judgment to Welding Technologies on the federal and state claims for which summary judgment was sought, and declined to exercise supplemental jurisdiction over the remaining state law claims and therefore dismissed those claims.On appeal to the Eleventh Circuit, Welding Services argued that the district court erred in holding that Welding Services had failed to raise a genuine issue of material fact as to whether Welding Technologies' use of "WTI" and logo created a likelihood of confusion with its own "WSI" abbreviation and logo. Welding Technologies in turn argued that the district court should have denied that Welding Services' "WSI" abbreviation was entitled to trademark protection on the basis that it is generic.In first addressing the issue of whether the "WSI" abbreviation was generic and therefore unprotectable, the Eleventh Circuit noted that Welding Services had not successfully registered either the abbreviation "WSI" or the stylized logo. Further, the Trademark Office refused to register the name "Welding Services Inc." when registration was applied for on the basis that the proposed mark was generic for Welding Services on the basis the name was literally the same as the services being provided under the name, i.e., welding services. In the application to register "WSI," the court further noted that Welding Services described its services as "[w]eld metal overlay services and fabrications." Moreover, in its statement of material facts in the district court, Welding Services used the phrase "welding services" to denote the services that both it and Welding Technologies provided under their respective marks. In this regard, the Court observed that a would-be proprietor's use of the words in a mark to refer to the kind of services it and its competitors provide is powerful evidence that the words in the putative mark are being used generically. The court therefore concluded that Welding Services use of the words in its name had to be considered to be generic.This did not decide the issue, however, and the court next turned to whether Welding Services use of the abbreviation of its name "WSI" was likewise generic. The court noted that abbreviations of generic words may become protectable if the party claiming protection can show that the abbreviation has a meaning distinct from the underlying words in the mind of the public. The evidence indicated that Welding Services had not created in its advertising a separate meaning for "WSI" distinct from the words "Welding Services Inc.," noting that the "WSI" initials were always displayed immediately next to the generic words "Welding Services Inc." in advertising. Accordingly, the court held that "WSI" alone was also not protectable.While the court was not entirely convinced that the Welding Services stylized logo was separately protectable, the court refused to hold that summary judgment against Welding Services would have been proper on this question, and instead held that summary judgment was proper against Welding Services on the claim for infringement of the stylized logo. In this respect, the court stated that the logos of the parties did not appear similar, and Welding Technologies' logo further included its company name below its logo. The court thus included on these bases that there was not, "the least possibility of confusing the two stylized logos."The court also held that the record did not support Welding Services' contention that Welding Technologies intended to cause confusion in adopting its mark, and further discarded Welding Services' allegation of actual confusion between the marks, finding no explicit connection between the alleged incidents of confusion and the stylized logos. Finally, the court noted that the nature of the parties' businesses required the purchasers of their services to be sophisticated and, thus, even less likely to be confused by any similarities present between the marks.To read the full decision in Welding Servs., Inc. v. Foreman, click here.

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